David Buszard had a flame retardant patent application (10/429,429) that claims a chemically derived flexible polyurethane foam. The claims were rejected
under § 102 by prior art (Eling) that crushed rigid foam to make it flexible.

"A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference." In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994); see
Karsten Manufacturing Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
Cir. 2001) ("Invalidity on the ground of 'anticipation' requires lack of
novelty of the invention as claimed. . . . that is, all of the elements and
limitations of the claim must be shown in a single prior reference, arranged
as in the claim.").

Buszard argued that Eling was chemically different.

The PTO states that Buszard's claims, when given their broadest
interpretation, read on the Eling product and thus are anticipated by Eling.
Buszard states that this interpretation is devoid of support, even when
viewed in accordance with the protocols of patent examination. During
examination, the patent application claims may be given their broadest
interpretation consistent with the specification, in order to facilitate
sharpening and clarifying the claims at the application stage. In re
Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984) ("The PTO broadly interprets
claims during examination of a patent application since the applicant may
'amend his claims to obtain protection commensurate with his actual
contribution to the art.'") (citation omitted). Thus the patent examiner and
the applicant, in the give and take of rejection and response, work toward
defining the metes and bounds of the invention to be patented. See In re
Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989) (the broadest reasonable
construction of claims during examination serves to target ambiguities in
claims at the time when the claims are readily amended). As explained in
Zletz: "An essential purpose of patent examination is to fashion claims that
are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
administrative process." Id. at 322. Buszard argues that the Board's
construction of the claims to read on and thus be anticipated by Eling's
crushed solid foam is not reasonable.

The codeword for CAFC take on USPTO position: "beneath contempt."

The Solicitor proposed at oral argument that when a rigid foam is
mechanically crushed, the chemical bonds are broken and the product is the
same as the flexible product of a flexible foam reaction mixture. There was
no rejection on this ground, there is no evidence or argument to this effect
in the record, this theory was not mentioned by any examiner or in the
Board's opinion, and it appears to be contrary to science. This theory was
proposed without support or citation, and without opportunity for Buszard to
refute it. It is not sufficiently creditable to warrant further
consideration.

Prost, in dissent, skates with "there is no need for the Board (or this
court) to engage in a complicated, in-depth claim construction analysis during
patent prosecution."

If a claim term is ambiguous or confusing, the applicant can (and should)
clarify it. Or, if an applicant wants a claim term to have a specific
meaning, the applicant can either amend the claim to expressly convey the
applicant’s intended meaning or provide an express definition for the claim
term in the specification. See Yamamoto, 740 F.2d at 1571-72 (noting that an
applicant can overcome a rejection by amending the claim language); Morris,
127 F.3d at 1054 (noting that the PTO must take into account definitions
contained in the specification when interpreting claim language).

Accordingly, if the PTO rejects a claim because a broad construction
renders the claim invalid as anticipated, the applicant can, for example,
amend the claim to narrow its scope and, thus, overcome the rejection. In
this way, interpreting claim language broadly during prosecution “serves the
public interest by reducing the possibility that claims, finally allowed,
will be given broader scope than is justified.” Yamamoto, 740 F.2d at 1571;
see also id. (“The PTO broadly interprets claims during examination of a
patent application since the applicant may ‘amend his claims to obtain
protection commensurate with his actual contribution to the art.’”).

Prost then falls hard.

In this case, the only disputed issue is whether the Eling reference
discloses a “flexible polyurethane foam reaction mixture” as required by
Buszard’s pending claims. The Board construed this term to include “any
reaction mixture which produces, at least ultimately, a flexible
polyurethane foam.” In re Buszard, No. 2006-1120, 2006 WL 1665669, at *2
(Bd. Pat. App. & Int. Apr. 20, 2006). This construction encompasses mixtures
that produce polyurethane foams that are made flexible upon crushing, such
as the mixture disclosed in the Eling reference.

Earth to Prost: it doesn't take a crash-course from Professor Chemistry to
know that crushing is not any possible part of "a [chemical] reaction
mixture."

Comments

Of course the decision makes sense, it was authored by J. Newman. It helps that the Solicitor is arrogant and has virtually no real patent experience - that way passing the red face test on science is easy.

Posted by: Joyce at September 27, 2007 3:02 PM

J. Newman - chemist, former patent attorney.

J. Prost - carried Orrin Hatch's jacket.

No contest.

Posted by: Pete at September 28, 2007 6:16 AM

Never mind how the Board construed "flexible foam", aren't all PU foam reaction mixtures "flexible", even those of Eling? If one arranges the claim in the EPO "characterized by" form, relative to Eling, isn't "flexible" the ONLY thing that gives the claim novelty over Eling? Isn't the core purpose of a claim to draw a bright line between what's in and what's outside the claim? Where's the unambiguous line between "flexible" and what's not flexible? Isn't this claim hopelessly ambiguous and unclear and indefinite? CAFC wrong again, no?

Posted by: MaxDrei at September 30, 2007 12:51 AM

I should have included in the comment above that, as a matter of plain English, the adjective "flexible" qualifies the noun "mixture", just like "foam" and "reaction". All specify what sort of "mixture" the claim is announcing. I don't see the reason for the Board and the CAFC to hold that "flexible" unambiguously qualifies the noun "foam".